Re: [gtld-council] NCUC proposals to amend gnso recommendations on new gtld policy

[Liz Williams <liz.williams@xxxxxxxxx>]

Hi Robin

Thanks for this ongoing debate.  Do you have any other examples that  
would help the discussion outside the US?  Not all countries have any  
First Amendment-like rights and it would be useful to have this  
discussion on a broader basis.
Liz


.....................................................

Liz Williams
Senior Policy Counselor
ICANN - Brussels
+32 2 234 7874 tel
+32 2 234 7848 fax
+32 497 07 4243 mob




On 05 Jun 2007, at 01:08, Robin Gross wrote:

> Hi Mike,
>
> Well US courts have consistently disagreed with your view and ruled  
> that there are numerous lawful uses of a trademark in a domain name  
> by someone other than a trademark holder.  Trademark law has never  
> granted a monopoly on language.  It only regulates specific uses of  
> words or symbols, and only commercial uses.  Non-commercial  
> expression is not regulated by trademark rules under the law.
> One of the most cited US legal precedents to examine the boundary  
> of free expression rights and trademark rights is Taubman v.  
> Webfeats 319 F.3d 770 (6th Circuit 2003), an early "cyber-gripe  
> case".   The court explained, "we will first explain the  
> interrelation between the First Amendment and the Lanham Act. ...  
> The Lanham Act is constitutional because it only regulates  
> commercial speech, which is entitled to reduced protections under  
> the First Amendment."   In Taubman the appellate court held that  
> many expressions of a mark were not a 'trademark use' and not  
> likely to cause confusion and  therefore "outside the jurisdiction  
> of the Lanham Act and necessarily protected by the First Amendment."
> The 6th Circuit spoke directly to our issue, "The rooftops of our  
> past have evolved into the Internet domain names of our present.   
> We find that the domain name is a type of public expression, no  
> different in scope than a billboard or a pulpit, and [defendant]  
> has a First Amendment right to express his opinion about  
> [plaintiff], as long as his speech is not commercially misleading,  
> the Lanham Act cannot be summoned to prevent it."  Taubman  
> explicitly held there First Amendment protection to use a trademark  
> in a domain name to criticize a business.  See:
>  http://pacer.ca6.uscourts.gov/cgi-bin/getopn.pl?OPINION=03a0043p.06
>
> Another US circuit, the 9th, has also set similar precedent in  
> Bosley Med. Inst. v. Kremer, 403 F.3d 672 (9th Cir. 2005) over a  
> non-commercial gripe-site using a trademark in its domain name.   
> Again the court agreed that the non-commercial expression of  
> opinion was not a "trademark use" subject to regulation by the mark  
> holder. "[Defendant] is not [plaintiff's] competitor; he is their  
> critic.  His use of [plaintiff's] mark is not in connection with a  
> sale of goods or service - it is in connection with the expression  
> of his opinion about [plaintiff's] goods and services.  [Plaintiff]  
> cannot use the Lanham Act either as a shield from ... criticism, or  
> as a sword to shut [defendant] up."
> See:
> http://www.ca9.uscourts.gov/ca9/newopinions.nsf/ 
> 3B0C93358B88F28D88256FD90056994B/$file/0455962.pdf?openelement
> The US 2nd Circuit has also provided strong protection for  
> noncommercial speech and recognized that words and phrases are used  
> in many different ways in a digital environment, to serve differing  
> goals, and that not all of these uses are controlled by trademark  
> law.  In 1-800 Contacts v. WhenU.com 414 F3d 400 (2d Cir. 2005),  
> the 2nd Circuit ruled that the vast majority of such uses were  
> outside the scope of trademark law and only those specific uses  
> visually associated with the sale of goods/services could be  
> regulated by trademark. See:
> www.eff.org/legal/cases/1800*contacts*_v_whenu/decision.pdf
> So the US law is clear in permitting numerous non-commercial uses  
> of a trademark in a domain name, to discuss, criticize, compare,  
> provide general information about a company or  product.  Freedom  
> of expression is a legally recognized value that trademark rights  
> do not supersede.   The current gnso draft recommendations diverge  
> significantly from the law on this point.
> Robin
>
> Mike Rodenbaugh wrote:
>
> > I disagree with the NCUC's suggested change to Reco #3.  There are  
> > ample
> > numbers of 2d and higher lever domains that can be used for  
> > freedom of
> > expression, with exponentially more to come.  NCUC seems to  
> > suggest that
> > some prospective TLD operator would want to run an entire TLD full of
> > gripe sites as to one trademark.  Such a business would not be  
> > protected
> > under the guise of 'freedom of expression' under any nation's law  
> > that I
> > am aware of.
> > The current Reco is tied to a core ICANN value of protecting security
> > and stability.  If a TLD corresponding to a well-known trademark were
> > awarded to any entity other than the trademark owner, it is highly
> > likely that many users would be confused and placed at higher risk of
> > crime through activity at that TLD.  This is the same security and
> > stability concern that underlies the UDRP, as to 2d level and higher
> > domains.
> >
> >
> > Mike Rodenbaugh
> >
> > Sr. Legal Director
> >
> > Yahoo! Inc.
> >
> >
> > NOTICE:  This communication is confidential and may be protected by
> > attorney-client and/or work product privilege.  If you are not the
> > intended recipient, please notify me by reply, and delete this
> > communication and any attachments.
> >
> >
> > -----Original Message-----
> > From: owner-gtld-council@xxxxxxxxxxxxxx
> > [mailto:owner-gtld-council@xxxxxxxxxxxxxx] On Behalf Of Robin Gross
> > Sent: Saturday, June 02, 2007 10:23 AM
> > To: gtld-council@xxxxxxxxxxxxxx
> > Subject: [gtld-council] NCUC proposals to amend gnso  
> > recommendations on
> > new gtld policy
> >
> > NCUC has developed 5 new proposals to amend the draft gnso  
> > recommendations on new gtld policy.
> > These proposals are meant to give some recognition to freedom of  
> > expression values in our recommendations.  The proposals also  
> > address concerns about ICANN becoming enmeshed in national policy  
> > debates and would keep the Internet core neutral of such conflicts.
> > The 5 proposals are not meant to be accepted only as a package,  
> > but should be considered individually also.
> > NCUC proposals to amend draft GNSO recommendations:
> >  http://www.ipjustice.org/ICANN/062007.html
> >
> > I welcome an opportunity to discuss the amendments at greater  
> > length and
> > will try to answer any questions you may have on them.
> >
> > Thank you for considering them.
> >
> > Best,
> > Robin